Feynman LIANG Patent & Trademark Attorney	Published on June 30, 2021

While some applicants wish to keep the application pending as long as possible, some would like to have their Chinese invention patent application granted fast in line with their business strategy.

There are a few ways to expedite the invention patent examination in China, namely, Patent Prosecution High Way (PPH), Prioritized Examination, Intellectual Property Rapid Protection Centers Proceedings and Pre-examination. Among them, Intellectual Property Rapid Protection Centers Proceedings and Pre-examination are for domestic applicants only (not limited to Chinese owned companies, but also for any joint venture or foreign owned companies established in China). In this article, we will focus our discussion on means of expediting available for foreign applicants.

I. Prioritized Examination
Details of Prioritized Examination is provided in the Administrative Measures for the Prioritized Examination of Patents (2017) [1] (hereinafter referred as “Administrative Measures”).

1. Which applications are eligible for Prioritized Examination?
According to the Administrative Measure, applications which falls within the following list of subject matters would be eligible for prioritization.

1) National key development industries such as energy conservation and environmental protection, new generation information technology, biology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, and smart manufacturing;
2) Industries encouraged by the provincial and municipal governments that have districts within the city.
3) Internet, big data, cloud computing and other fields and the evolution of the technology or product is fast;
4) The patent applicant has made preparations for implementation or has begun implementation, or there is evidence that others are implementing their inventions; 5) The patent application that was first filed in China and then filed in a foreign country; or
6) Technology that is of great significance to national interests or public interests and need to be reviewed quickly.

Besides the above requirement, the technical area of the application shall fall within the technical areas as provided by the local IP administration of the city of the Chinese patent firm that represents the applicant. Take Beijing for example, here below is the list of 10 technical areas eligible for Prioritized Examination released by Beijing IP Administration [2].
1) New generation of information technology industry;
2) Integrated circuit industry;
3) Medical and health industry;
4) Intelligent equipment industry;
5) Energy saving and environmental protection industry;
6) New energy smart car industry;
7) New material industry;
8) Artificial intelligence industry;
9) Software and information service industry;
10) Technology service industry.

2. Timing to petition for priority examination
After Notice of Entering Substantive Examination is received and before issuance of the first Office Action.

3. How fast can the prioritized examination be?
a) Ordinary examination
According to IP5 statistics report 2019 edition [3], the average pendency of the first Office Action for ordinary invention patent application is 14.9 months from the date the substantive examination request is filed. Average pendency of final decision (allowance or rejection) is 22.2 months from the date the substantive examination request is filed.

b) Prioritized Examination
As provided in Paragraph 2 of Article 10 of the Administrative Measure, the first Office Action should be issued within 45 days from the date the petition of Prioritized Examination is granted. Final decision (allowance or rejection) should be issued within 12 months from the date the petition of Prioritized Examination is granted.

4. What documents are required for the petition
1) Petition form for Prioritized Examination
2) Relevant prior art material (may be prepared by the Chinese firm)
3) Certificate of Incorporation of the applicant

5. Special note
There is limitation on the number of granted petitions of Prioritized Examination every year. Therefore, even if the technical area of the application meets the requirements of the Administrative Measure and the requirements of local IP administration, petition may still be likely to be rejected. If the petition is rejected, the application will be examined as an ordinary application.

II. Patent Prosecution Highway (PPH)
If the technical area of the application does not fit in any of the allowable fields as prescribed by the Administrative Measures and local IP administration, and if a correspondent application in a PPH participating patent office has at least one allowable/patentable claim, the applicant may consider PPH to accelerate the prosecution.

1. Which applications are eligible for prioritized examination?

There are three types of PPH: Common PPH, IP5 PPH and PCT-PPH.

Common PPH: China has signed bilateral agreements with a number of countries on PPH program. By the end of 2020, China National Intellectual Property Administration (CNIPA) has signed bilateral agreement with 30 countries [4]. As long as a correspondent application has been filed in a PPH participating patent office, regardless whether the applicant is a resident of the country of the corresponding patent office, if the correspondent application has at least one allowable/patentable claim, the applicant may take advantage of the Common PPH. For example, if the applicant has an allowed Brazilian patent application, he/she/it may request to participate in the PPH in China based on the Brazilian patent application.

IP5 PPH: If the applicant’s allowed patent application is a US, European, Japanese or Korean patent application, the applicant may take advantage of IP5 PPH.

PCT -PPH: If the Chinese application is a national phase entry of a PCT application, and the PCT-PPH request is based on the work product of the International Searching Authority, the applicant may choose PCT-PPH.

Claim correspondence
For PPH, all claims in the Chinese application must sufficiently correspond to the patentable claims in the foreign or the PCT application. The Chinese claims should be similar in the scope or narrower than the allowed claims.

Please note that there are two chances of voluntary claim amendment for application based on Paris Convention and three chances of voluntary claim amendment for PCT Chinese National Phase. For Paris Convention, applicant may amend their claim when filing the request for substantive examination, or within three months after the applicant receives the Notice of Entering Substantive Examination Phase. For PCT Chinese National Phase, the applicant may amend their claim voluntarily when entering the Chinese National Phase, filing the request for substantive examination, or within three months after the applicant receives the Notice of Entering Substantive Examination Phase. That is the say, the last chance for filing PPH with amendment with the sufficiently correspondent claims is within three months after the applicant receives the Notice of Entering Substantive Examination Phase. After that, it is not possible to make voluntary claim amendment and PPH petition will be rejected because of the failure to provide sufficiently correspondent claims.

If foreign applicant wishes to take advantage of PPH, in order to have the allowable claims of correspondent application ready before the last chance of voluntary amendment in China, it is suggested to delay the examination of Chinese application by filing the request for substantive examination as late as possible close to the 3-year deadline from the priority date. Alternatively, the applicant may accelerate the examination of the correspondent application on which the PPH request is based. For example, if PPH based on allowable claims of the US application is intended, the applicant may try to file petition before USPTO to prioritize the correspondent US application in order to catch the last chance of voluntary amendment for the Chinese application.

2. Timing to petition for PPH
As soon as the Chinese application is published, the applicant may file the petition for PPH. Such petition can be file when filing a request for substantive examination, or after receiving the Notice of entering into substantive examination, but before the first office action is issued. As mentioned above, timing of filing PPH petition should be considered in conjunction with the timing of voluntary amendment.

3. How fast can the PPH be?
a) Ordinary examination
As indicated above, statistic shows that the average pendency of the first Office Action for ordinary invention patent application is 14.9 months and the average pendency of final decision (allowance or rejection) is 22.2 months from the date the substantive examination request is filed.

b) PPH
According to the published source, the average pendency of the first Office Action is 2.2 months from the date the PPH request is granted. The average pendency of final decision (allowance or rejection) is 11.2 months from the date the PPH request is granted [5].

4. What documents are required for the petition
1) Documents Required to Participate
2) Copies of all office actions with translations to English or Chinese.
3) Copies of all claims found to be allowable with translations to English or Chinese.
4) Copies of all nonpatent literature cited in the corresponding application used in any rejection (translations not required).
5）A table showing how the Chinese claims correspond with the allowable claims. The Chinese claims can be the same or narrower.

III. Other tips for speeding up the prosecution
If the Chinese application does not fulfill the requirements for these two means of acceleration, the applicant may take certain measure to speed up the prosecution. Different from many other countries, in China, the application will only be examined after it is published in 18th month from the priority date. Therefore, if the applicant wishes the application to be examined earlier, he/she/it may request for early publication at the time of filing the Chinese application together with the request for substantive examination. In the way, the application will be published soon and enter into substantive examination phase.

[1] http://www.gov.cn/xinwen/2017-08/02/content_5215464.htm
[2] http://www.beijing.gov.cn/zhengce/zhengcefagui/201905/t20190522_60664.html
[3] https://www.fiveipoffices.org/statistics/statisticsreports/2019edition
[4] http://www.gov.cn/xinwen/2021-02/24/content_5588638.htm
[5] https://www.jpo.go.jp/toppage/pph-portal-j/statistics.html